NATIONAL
ARBITRATION FORUM
P. O. Box 50191
Minneapolis MN 66405
Percy Miller dba Boutit, Inc./Soldier
University, Inc.v. Divine Mafa dba The New No Limit Records, Inc.
Claim Number: FA0207000114771
PARTIES
Complainant
is Percy Miller dba Boutit, Inc./Soldier
University, Inc., Alhambra CA, USA (“Complainant”) represented by Patrick W. Fletcher. Respondent is Divine Mafa dba The New No Limit Records, Inc., Memphis, TN, USA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain names at issue are <thenewnolimitsrecords.com> and <pmillercollection.com> registered with Register.Com, Inc. Two more domain names are recited as in
issue in the Response and Counterclaim:
<pmiller-collection.com> and <nolimitrecords.com>.
At the end of its submission,
Respondent/counter-claimant’s (hereinafter “Respondent”) then formal request is
limited to
leave
<nolimitrecords.com> where it is, in Complainant’s hands,
leave
<thenewnolimitrecords.com> where it is, in Respondent’s hands,
transfer
<pmiller-collection.com> to Respondent/Counter-claimant.
leave
<pmillercollection.com> where it is, in Respondent’s hands.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Tom
Arnold, as sole Panelist.
A
hard copy of the original Complaint, dated June 25, 2002, is date stamped as
received by the National Arbitration Forum (the “Forum”) July l, 2002. An electronic copy was received July 3,
2002.
On
July 8, 2002, Register.com confirmed by e-mail to the Forum that the domain
names
<thenewnolimitrecords.com>
and <pmillercollection.com> are registered with Register.com and
that the Respondent is the current registrant of those names.Register.com has
verified that Respondent is bound by the Register.com registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
July 17,2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 6,
2002, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@thenewnolimitrecords.com, and
postmaster@pmillercollection.com by e-mail.
A
timely Response was received and determined to be complete on July 22, 2002.
On
July 31, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Tom Arnold as sole Panelist.
Complainant
requests that the domain names <thenewnolimitrecords.com>
and <pmillercollection.com> be transferred from Respondent to
Complainant.
Respondent-Counter-Complainant
requests that <pmiller-collection.com> be transferred to Respondent, and
that “domain name THENOLIMITRECORDS.COM remain with Respondents and domain name
NOLIMITRECORDS.COM remain with Claimant since they are not similar in any
slight way.”
ICANN RULE
3(b)(ix)
The intermix of
the parties’ recitations of contentions on the merits of the disputes is
adverse, contradictory, complex and confusing. Several places apparent error
appears without sufficient evidence by which to reconcile the positions. In such cases the easy way to assure
avoidance of feelings and/or arguments of error by the Panel in summarizing the
party contentions, whose thought process includes all of their rebuttals to
their adversary’s positions that didn’t get into their submissions, is to
reproduce them in full. I do that here,
excepting that I leave out the formalities.
Skipping as
aforesaid the initiating formalities I reproduce the Complaint’s substantive
allegations relative to the dispute, beginning at § V.
* * *
V.
Trademark
(ICANN Rule 3(b)(viii))
This Complaint
is based on the trademark NO LIMIT RECORDS for prerecorded audio tapes, compact
discs featuring music and entertainment and entertainment services, namely,
production of audio cassette tapes and compact discs featuring music and
entertainment as described in United States Trademark Registration number
2374405. In addition, this Complaint is
based on the common law trademark P. MILLER for clothing, namely, t-shirts,
caps, hats, jerseys, jackets, shorts, pants and footwear as described in
Trademark Application serial number 76/404287 that is currently pending before
the United States Patent and Trademark Office.
VI.
Grounds
for Complaint
(ICANN Rule 3(b)(ix))
This Complaint
is based on the following factual and legal grounds:
1. Complainant, Percy Miller, a.k.a. P. Miller and Master P,
is a famous entertainer. A copy of the MTV.COM Percy Miller web page is
attached hereto as “Annex 2”. He has
sold more than 50 million records and has acted in 16 movies. A copy of the AMAZON.COM
Percy Miller web page is attached hereto as “Annex 3”. In addition, he has appeared on the cover of
Fortune Magazine as number 28 of America’s “40 Richest under 40” and on Forbes’
“Top 10 List of Highest Paid Entertainers” for two years in a row. A copy of an E! Entertainment news article
about Percy Miller is attached hereto as “Annex 4”.
2. Complainants,
Percy Miller and his company Boutit, Inc., are the owners of United States
trademark NO LIMIT RECORDS, bearing registration number 2374405. A copy of the United States Patent and Trademark
Office electronic record is attached hereto as “Annex 5”. Complainants have used said mark in commerce
continuously since 1992 and have produced and released more than 40 records
selling more than 50 million copies bearing the mark NO LIMIT RECORDS.
3. Complainants,
Percy Miller and his company Soldier University, Inc., are the owners of common
law trademark P. MILLER and possess Trademark
Application serial number 76/404287, currently pending before the United States
Patent and Trademark Office. A copy of the United States Patent and
Trademark Office electronic record is attached hereto as “Annex 6”. Complainants have used said mark in commerce
since 1999 and have sold clothing and accessories bearing that name in both
retail outlets and online. Accordingly,
consumers have come to identify the famous entertainer, Percy Miller, and his
distribution company, Soldier University, Inc., as the source of goods and
services bearing the mark P. MILLER.
4. Complainant, Percy Miller, owns the domain name
NOLIMITRECORDS.COM and advertises his goods and services thereon through his
management company Universal Records / Motown.
A copy of Complainant’s NOLIMITRECORDS.COM main web page is attached
hereto as “Annex 7”.
5. Complainant, Percy Miller, owns the domain name
PMILLER-COLLECTION.COM and advertises his goods and services thereon through
his distribution company 100 U Clothing, LLC.
A copy of the PMILLER-COLLECTION.COM main web page is attached hereto as
“Annex 8”.
6. Respondent is the registered owner of the domain names THENEWNOLIMITRECORDS.COM and
PMILLERCOLLECTION.COM that were registered on March
9, 2002, and December 22, 2001, respectively.
A copy of the THENEWNOLIMITRECORDS.COM and PMILLERCOLLECTION.COM whois printouts are attached hereto as “Annex 9” and
“Annex 10”.
7. Respondent’s domain name, THENEWNOLIMITRECORDS.COM, is
confusingly similar to Complainants’ registered trademark NO LIMIT RECORDS and
corresponding domain name NOLIMITRECORDS.COM.
Respondent has attempted to legitimize its cybersquatting by filing an
“intent to use” trademark application for the term THE NEW NO LIMIT RECORDS. A
copy of the United States Patent and Trademark Office electronic record is
attached hereto as “Annex 11”. As
Respondent’s “intent to use” trademark application bears a filing date of
January 20, 2002, said application is prima facie evidence that Respondent did
not use the NEW NO LIMIT RECORDS mark prior to that date. Respondent’s “intent to use” trademark
application will likely be unsuccessful based upon its confusing similarity to
Complainants’ registered mark and will be strenuously opposed by Complainants
if published for opposition.
8. Respondent’s domain name, PMILLERCOLLECTION.COM, is
confusingly similar to Complainants’ trademark P. MILLER and corresponding
domain name PMILLER-COLLECTION.COM. In
addition, Respondent’s web site PMILLERCOLLECTION.COM contains a picture of
Complainant, Percy Miller, and a statement that the clothing offered on said
web site was designed by Complainant, Percy Miller. A copy of the infringing PMILLERCOLLECTION.COM pop-up web page is
attached hereto as “Annex 12”. In fact,
Respondent copied the aforementioned graphics from Complainants’ web site, thus
violating the copyright laws of the United States, in an attempt to create a
likelihood of confusion with the Complainants’ mark as to the source,
sponsorship, affiliation, or endorsement of the infringing web site and its
products. Respondent has attempted to legitimize his cybersquatting by filing an
“intent to use” trademark application for the term P. MILLER. A copy of the United States Patent and
Trademark Office electronic record is attached hereto as “Annex 13”. As Respondent’s “intent to use” trademark
application bears a filing date of January 26, 2002, said application is prima
facie evidence that Respondent did not use the P. MILLER mark prior to that
date. Respondent’s “intent to use”
trademark application will likely be unsuccessful based upon its confusing
similarity to Complainants’ common law mark and corresponding trademark
application and will be strenuously opposed by Complainants if published for
opposition.
9. On June 12, 2002, the following entity was the registered
owner of the domain names THENEWNOLIMITRECORDS.COM
and PMILLERCOLLECTION.COM:
Itochun
Corporation
Domain
Name Sales Division
ITOCHU
CORPORATION (ITALL SECTION) 5-1 KITA-AOYAMA
Tokyo
107-77, Mainato-Ku 107-77
JP
813533894455
itochu@japan.com
Complainants,
by and through their attorneys, sent a Cease and Desist letter to the
aforementioned entity via email and U.S. Mail informing them that their actions
constituted a violation of
the Anticybersquatting Protection Act provisions of the Lanham Act and demanded
that they immediately cease using the domain names THENEWNOLIMITRECORDS.COM and
PMILLERCOLLECTION.COM. However, Itochun
Corporation responded by denying any knowledge of the domain names at issue and
claim that they have never heard of Respondent, Devine Mafa. Devine Mafa was merely using the Itochun
Corporation’s name as a front to hide his identity while maintaining control of
the domain name and its corresponding access codes through Register.Com,
Inc. In addition, Respondent registered
the email address Itochu@japan.com in an attempt to appear affiliated with the
Itochu Corporation while maintaining his ability to receive email directed to
the registered owner of the domain names at issue.
10. On June 18, 2002, Respondent, Devine
Mafa, sent an email to Complainants’ attorney in response to the aforementioned
Cease and Desist Letter stating that Respondent owned the domain names at
issue, that Respondent’s business is to sell domain names that they have listed
as trademarks, and demanding $100,000.00 for transfer of the domain names at
issue. A copy
of Respondent’s email to Complainants attorney is attached hereto as “Annex
14”.
11. On June 19,
2002, the registration information for the web sites at issue was changed from
the aforementioned Itochu Corporation to its current state. Said change was made by Respondent after
Complainants’ attorney informed Mr. Mafa that providing false information in a
domain name registration was evidence of “bad faith” under the UDRP.
12. Respondent
should be considered as having no rights or legitimate interests in respect of
the domain names because before any notice to the Respondent of this
dispute, Respondent did not make use of, or demonstrable preparations to use,
the domain names or a name corresponding to the domain names in connection with
a bona fide offering of goods or services. See ICANN Policy,
paragraph 4(c)(i). In addition, the
domain names are not names by which Respondent is commonly known or in which it
has any trademark or service mark rights in spite of its fraudulent trademark
applications. See ICANN Policy,
paragraph 4(c)(ii). Finally, as
discussed above, Respondent is making an illegitimate commercial use of the
domain names with intent to misleadingly divert consumers as evidenced by its
use of Complainant’s graphics and likeness on its infringing web sites. See ICANN Policy, paragraph 4(c)(iii).
13. The domain names THENEWNOLIMITRECORDS.COM and
PMILLERCOLLECTION.COM should be considered as having
been registered and used in bad faith for the following reasons:
(a)
Respondent has registered or has acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainants for valuable consideration in excess of
Respondent’s documented out-of-pocket costs directly related to the domain
name. Specifically, Respondent has
offered to sell the domain names at issue for no less than $100,000.00. See Annex 14.
(b)
Respondent has registered the domain names primarily for the purpose of
disrupting the Complainant’s business by redirecting Internet users seeking the
products and services of Percy Miller and his associated companies to
Respondents web sites THENEWNOLIMITRECORDS.COM and PMILLERCOLLECTION.COM.
(c)
By using the domain name THENEWNOLIMITRECORDS.COM and PMILLERCOLLECTION.COM,
Respondent is intentionally attracting, for commercial gain, Internet users to
Respondent’s on-line locations by creating a likelihood of confusion with the
Complainants’ marks as to the source, sponsorship, affiliation, and endorsement
of Respondent’s web site and the products and services offered thereon, as evidenced by its use of Complainant’s copyright
protected graphics and likeness on its infringing web sites. See Annex 12.
For all the
foregoing reasons, the domain names THENEWNOLIMITRECORDS.COM and
PMILLERCOLLECTION.COM should be considered as having been registered and used
in bad faith, in violation of ICANN Policy.
Respondent’s transparent attempts to legitimize its cybersquatting by
submitting fraudulent trademark applications and transferring ownership of the
domain names from an unrelated Japanese company to himself once he became aware
that this action would be filed should only serve to strengthen Complainants’
case in this matter.
B. Respondent/Counter Complainant
Again skipping over
formalities, Respondent/Counter Complainant alleges:
IV.
DOMAIN NAMES IN DISPUTE
(ICANN
Rules 3(b) (iv) and (vii))
The
following domain names are subject of this respondent /counter-complainant
thenewnolimitrecords.com
pmillercollection.com
Pmiller-collection.com
nolimitrecords.com
domainregistrar@register.com 212-798 9200
Registrar’s Name: Register.com, Inc,
Registrar Address: 575 Eighth Avenue 11thFloor, New York, NY 1001
III.
Trademark
ICANN RULE (3b) (viii)/ (5b) (i)
The complainant, Percy Miller famous as Master
P, a former Drug Dealer on his own confession, a Gang-Music Rapper (Annex 20)
is trying to hijack the Domain Names of the Trademarked and registered
incorporated company, The New No Limit Records, Inc. (Annex 1-a)
The Serial Number of The New No Limit Records
Trademark is 78/103738 (Annex 1)
The serial number of the P. Miller Trademark is
78/105071(Annex 2)
The New No limit Records Inc owns the
thenewnolimitrecords.com and pmillercollection.com
Percy Miller’s, (complainant’s) trademarks were
disqualified by the United States Patent and
Trademark Office, on the grounds of
over-similarity to our Trademark P. Miller (Annex 3/4)
Response/Complaint
(ICANN
Rule 3(b) (xi) / 5(b) (1)
(Annex 5) P
MILLER
Recent Trademark App
Date: May 6 2002
(Annex 6) P MILLER
ROMEO Recent Trademark
App Date: April 29 2002
(Annex 7) P Miller Signature Collection Recent Trademark App
Date: April 29 2002
(Annex 8) P.Miller Signature Collection Recent Trademark App
Date: April 22 2002
(Annex 9) P. Miller Clothing Recent Trademark App Date: April 22 2002
He registered names that violate the rules
in a bid to hijack our domain names.
His initial intent to use registration with The USA Trademark and patent
office were
disqualified on the grounds of over similarity with our Trademark P.
Miller
(Annex 3) P.Miller Shorties
Date Disqualified April 4
2002
(Annex 4) Passion by P.Miller
Dates Disqualified April 4
2002
When the complainants Trademarks were
Disqualified, he approached us and offered to purchase the Trademarks and
domain Names. We refused on the grounds
that we were building our own clothing company since 1998.
It is apparently obvious that the complainant
has no need to play a fair game. He
will keep registering the same domain
names and Trademarks as long as they will allow him to do business or because
he has the ability hire 20 different attorneys to represent him against a small
cooperation like ours or has the money and means to send people to ransack our
office for documents. (See Annex on
Police Reports, annex 10a and 10b)
Our refusal to sell followed physical threats
from the complainant, Percy Miller and his young brother Corey Miller of
Physical Bodily harm to Divine Mafa. He
promised that something will happen to us. Following those events we had
break-ins at our office suite. See police reports Annex 10a and 10b.
Rap
Lyrics from Master P Music downloaded from the internet (Annex 15). Most Of
these Gang-Music Rappers live the life of what they preach. His young brother
Corey Miller, who phone called Divine Mafa threatening to do harm, is now on a
2nd Degree murder charge in Louisiana State. (Annex 16)
Anyone in his right mind would not want to have
anything to do with Percy Miller and his young brother. It is unfortunate that our situation and
position with them is purely coincidental.
We never even knew who they were.
If
the complainant has been doing business as P. Miller clothing, since 1999 how
come he has just began to register Trademarks and Domains as early as last
month, May 2002?
More-so
complainant has been using, No Limit Clothing In commerce since 1999, and
not
P. Miller. (Annex 13a and 13b). The complainant’s statement are dishonest and not credible.
The complainant, Percy Miller breaks the rules
arrogantly just like the lyrics in his Gang-
Rap
Music, disregarding
the Law and the Government because he believes that his money can protect
him and he likes to bully those without as much money as he has. See Annexes 33 and 34. Claimant was sued for
fraud and deceit and unjust enrichment.
4. The
respondent owns the domain name Pmillercollection.com. The complainants domain name
Pmiller-collection.com is confusingly similar to respondents. Complainant has attempted to legitimize
hijacking our domain names by filing an-intent to us trademark for P Miller and
various other derivative names as early last month May 2002. (See annex 5,6,7,8 and 9.)
Said application is prima facie evidence that
Complainant did not use the P Miller mark prior to those dates. Complainant’s
intent to use applications will cause us strife financially since we have to
keep vigorously defending our marks and opposing his intentions to hijack them from
us However, it is not a big deal to our complainant because he can afford to
keep hiring top notch attorneys and hopes that we will just give up the fight.
5
Complainant Percy Miller asserts that he has used the Trademarks P. Miller for
clothing labels since 1999. That is untrue. Records indicate that No Limit Clothing is his clothing
company and has Trademark since 1998 (annex 13a/b).
6. Respondent has a legal Right to own the
domain names since he has trademarked the domain names first, and published the
domains first, and had no knowledge of the claimant existence.
7. The New No Limit Records, is trademarked (See
Annex 1) by the respondent and is nowhere similar to No limitrecords.com. They
are six character letters before the no limit records, which is also a password
rule. Claimant’s assertions that user’s will be confused is unrealistic.
If
the claimant claims that our application for The New No Limit Records mark in
January 2002 is prima facie evidence that we did not use the
mark prior to that date, then it will be fair for the Panel to apply the same
rule to him for having recently filed “intent to Use” Trademarks for www.pmillercollection.com as
recently as May 2002.(See Annex 5 , Annex 6, Annex 7, Annex 8, and Annex
9) IT IS PRIMA FACIE EVIDENCE AGAINST’S
CLAIMANT THAT HE NEVER USED MARK PRIOR TO DATES APPLIED FOR MARK. Our fact is
that the claimant’s reasoning is not honest in nature.
8. Percy Miller asserts that he has a right to everything that bears the name P. Miller and every other domain name on the internet,
just because his birth name is Percy Miller.
In our company we have partners named Patrick
Miller, Percy Miller, friends named Paul Miller and the phone book ( Annex 30) is
listed with a lot of people called P. Miller.
The
trademark law does not allow anyone to trademark a person’s name, for the simple reason that a person
is not a product. A product is tangible and can be sellable.
Percy Miller has never used his birth name as a
commercial mark till after an ITU filing in May 2002. It should not be allowed to be a Law that the mark P. Miller be
given to him alone when in actual fact he has just began trying to register it
as a name.
Percy Miller also asserts
that he is a famous entertainer, and
claims that he should be given the domain, name Pmillercollection.com on this
basis. His own attorney has shown evidence that Percy Miller is very famous as Master P.(complainants Annexes 2 ,3 AND 4) It
will not be logical to give him leverage as far as the Master P name is concerned since he is known amongst the blacks and
Gang- Rap music community. The majority of the citizens in this Great Country
of United States of America have never heard of this complainant. His claims of
being famous do have very little leverage to this complaint.
“Master P’’ is his commercial mark (annex 4).and
he known by that. He sells Gang-Rap Music using pseudo name, Master P. Continues……
Respondent’s registration of trademark P. Miller
and Domain name pmillercollection.com is based on its appeal and easiness in
terms of advertising European clothing products and his design styles.
When we registered these names, we had
absolutely no knowledge of who Percy Miller is.
Claimant
manufactured and fabricated evidence, asserting that we had web page pop-ups
with his client. His accusation is ludicrous. Why should we have his pop-ups.
First of all, the respondent web sites were
published much earlier than claimant’s web sites. We were only made aware of
the existence of a hyphened Pmiller-collection.com site when the claimant
contacted us by telephone offering pay $500.00
Claimant accuses us of legitimizing P. Miller.
How can we legitimize something we have no knowledge with. We never knew of this
claimant existence until the time he contacted us by telephone offering $500.00
to purchase the domain names. More-so the claimant registered his Trademarks as
early as last May 2002, and he has just recently published them, long after our
web sites had been running. In a normal circumstance, we could have never
register a hyphened business domain name like Pmiller-collection.com. This is
prima facie evidence against the claimant’s intent to hijack the respondent’s
domain names. Claimant promises
the Panel vigorous opposition of our Trademarks. How truthful are his promises,
(or it is a Bluff) when in actual fact he has lost two P. Miller trademarks on
April 4th 2002?
( see Annexes 4,5,6,7and 8)
9.
Percy’s Miller attorney called me on the 10th of June 2002 advocating
that we settle the case or risk loosing the domain names. We refused, but then
he told us that he was From Harvard University and had some influence with
people at ICAAN and the trademark office. He assured us that some of the people
working at ICAAN were his former classmates.
On the 12th
of June 2002, our site Pmillercollection.com
had been hacked and not working. We called Register.com our host, to find
out the problem and could not figure out what the problem was right away.
Someone had gone into our system and tried to transfer the Domain name to
another hosting company without our consent. As of now, our domain name and
sites are still not functioning because, they were corrupted.
It is ludicrous for Percy Miller to assert that we were
hiding from him posing as another company. If so, that
we changed the registered owner 19th June 2002, how come Mr. Percy
Miller’s attorney, George netter was able to write a letter to us on the 27th March 2002 with
information from the registration data, by register.com. (See Annex 10)
We have nothing to hide from Percy Miller, even
after receiving threats from him over the phone.
The only item we changed on the 12th
of June 2002 was our email address. This was after our web site
Pmillercollection.com had been hacked after the threats from Percy Miller’s
attorney about him using his influence to shut us down. We spoke to
Register.Com customer service and they wanted us to give them an email that
would easily reach us. When we gave them, the email, ndabezitha@london.com, and the customer
service advised us to change the email from the hotmail account email listed on
the site administration systems to the one that could easily reach us. This was
purely administrative.
We have no knowledge of the company Percy Miller
is mentioning. We strongly believe that his evidence of communication with this
company should be forthcoming or he has doctored documents to tarnish our
credibility. It is so obvious that Percy
Miller’s attorney allegations are
fabrications and a standard format that he uses to present a case before ICAAN.
10 On the 18th June 2002, we never
emailed any letters to any one demanding any kind of money.
The claimant telephoned us to making offers to
purchase the site from Percy Miller and his Attorney at several occasions. We
advised them that the domain names were not for sale.
If they are any letters, our company did not
write them. They were probably doctored so we
appear as if we are cyber-squatting and also tarnish our credibility
before the Panel.
11. On the 19th June 2002, our
administrative information had always been the same, save the email that was
changed to facilitate communication with register.com
Never did Divine Mafa carry any conversation
about selling the site for $100 000.00 or seek advice from claimant’s attorney.
If respondent was hiding from Claimant, by using
a fake corporate address, how then did his attorney contact him as early as
March 2002.(See Annex 10) This is prima facie evidence against the claimant’s
fabricated and manufactured evidence in a bid to hijack our domain names.
Claimant is plainly presenting fake
unsubstantiated evidence before the Panel. Claimant’s allegations and case
before the Panel are a desperate measure by to acquire domain names that they
can not purchase.
The domain name Pmillercollection.com
was published online much earlier than Pmiller-collection.com
allegedly owned by the complainants. Our domain name registration was not
driven
by any pre-hand knowledge about the existence of
a hyphened domain name like
Pmiller-Collection.com. We were made aware of the existence of the
domain name pmiller-collection.com, when the complainant contacted us offering
to purchase our domain name pmillercollection.com, without a hyphen.
We the respondents have other domain names along
the same line, Pmillergear.com and
Pmillerwear.com. These were registered to help drive traffic to our main
site PmillerCollection.com. Thus more
evidence to our dedication and commitment to our projects.
12.
Respondent has demonstrated use of his web site contrary to
claims by the claimant. We have clothing and accessories on the sites. (Annex
11)
Thenewnolimitrecords.com is news and information
site and also posts information about our company.
However our pmillercollection.com has been
hacked down after receiving threats from the complainant attorney, and the
attorney’s promise of using his “connections” to shut us down.
We have Trademark rights to the name.
Complainant can not claim trademark rights since he just filed for an-
intent-to use about a month ago.
Claimant is not commonly known by these names as
evidenced by his own admission in his annexes, 2, 3 and 4.
Claimant
asserts that our Trademarks applications are fraudulent
whereas in-actual fact, it is the claimant who has trademark applications that
have been deemed fraudulent by the United States Patent and Trademark Office
(See Annexe3 and 4).As of April 4th 2002.
13. Our Domain names Pmillercollection.com and
Thenewnolimitrecords.com are legitimately registered and trademarked.
a)
Claimants evidence is lacking, manufactured and the attorney is using a
fabricated format to hijack domain names. Not a single day did the respondent
ever offer to sell any domain names to claimant. Claimant’s annexes are
fabricated and unfortunate.
b)
Respondent does not sell domain names and has never sold a single domain name.
Claimant is challenged to demonstrate the accusation.
c)
Respondent has no intention of disrupting Complainants business because they
have no similar market and interest. Respondent had no knowledge of who
complainant was before the dispute occurred.
d)
Complainants accusations are desperate. He accuses respondents of trying to
sell domain names and then disrupting business for him and at the same time
gaining commercially by attracting complainants internet users. If respondent
is gaining commercially, why then will he have the need to dispose of the domain
name. The argument by the claimant is not logical.
The claimant is in a desperate bid to accuse us
of everything that ICCAN POLICY is against.
Complainant’s argument is evidence that the claimant is not fair and is very
dishonest.
Congress passed law against cyber-squatting. It
was designed to help build the country’s economy and improve e-commerce.
Ownership is very important and it is our very capitalistic nature that built
the economy of this country.
Percy miller has nothing to gain from hijacking
our domain names and will not be hurt commercially if he does not hijack our
domain names because he made a choice to register the names he has the way he
did and the time he did
We have right of ownership of these domain names
because we found them first. Not on the internet alone but also at the
trademark office. Ownership is our right and part of our freedom in this
country.
We should not be forced to sell to someone,
because he has more financial leverage.
VII
Remedy Sought
ICCAN Rule 3(b)(x ) 5 (b)(1)
The Respondents request the Panel issue a
decision that domain-name
be transferred to Respondent”.
Domain name thenewnolimitrecords.com remains
with respondents and domain name nolimitrecords.com remains with claimant since
they are not similar in any slight way
* * *
I quote here the UDRP
section 4(a) which bind the Panel.
“a. Applicable Disputes. You [Domain name registrant, Respondent
here] are required to submit to a mandatory administrative proceeding in the
event that a third party (a “complainant”) [Percy Miller and his companies
here] asserts to the applicable Provider, in compliance with the Rules of
Procedure, that
“(i) your [RESPONDENT’S] domain name is identical or confusingly
similar to a trademark or service mark in
which the complainant has rights; and
“(ii) you [RESPONDENTS] have
no rights or legitimate interests in respect of
the domain name; and
“(iii) your [RESONDANTS’]
domain name has been registered and is being
used in bad
faith.
In
the administrative proceeding, the complainant [Percy Miller here] must prove
that each of these three elements are present.
* `* `*
c.
How to Demonstrate your [Registrant’s]
rights to and Legitimate Interests in the Domain Name . . .
. . . Any of the following
circumstances, in particular but without limitation, if found by the Panel to
be proved based on its evaluation of all evidence presented, shall demonstrate
your rights or legitimate interests to the domain name for purposes
“(i) before any notice to you of the dispute, your use of,
or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in
connection with a bona fide offering of goods or services;
“(ii) you (as an individual, business, or other
organization) have been commonly known by the domain name, even if you have
acquired no trademark or service mark rights; or
“(iii) you are making a legitimate noncommercial or fair use
of the domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
A.
The ICANN UDRP Process
Each of the submissions
before me, and the one in comparison with the other, gives rise to reasonable
skepticism about many of the conclusory facts alleged by each party, including
some of the key disputed facts.
The ICANN process is
intended to be a fast-track inexpensive process narrowly focused on egregious
and provable cybersquatting, and therefor is without party-initiative
discovery, cross examination, personal hearings.
Being a process without
party-to-party discovery, cross examination or live hearings and their values
in testing the accuracy of self-serving conclusory allegations, the process is
a poor process for the resolution of swearing matches and issues submitted
without well-supportive circumstantial evidence, including evidence of context
of activities which are relevant to the decision and issues such as those
involving intent.
The burden of proof is
upon the Complainant on his/its issues, and the Respondent-Counter-claimant on
his/its counter-claim issues, but the Complainant commonly does not have good
or meaningful access to evidence necessary to carry his/its burden and
accessible to the other party.
For these various
reasons among others, the ICANN process is not binding, thereby so as to
accommodate its focus upon fast-track-low-cost at the sacrifice of good tools
for the development of truth as against exaggerations or other misleading
allegations, but rather is subject to a judicial-process re-determination if
timely initiated within ten days of this Decision.
Where there is
uncertainty as between conflicting allegations, the context I’ve just described
is a basis for finding against the party with a burden of proof.
Further, in ICANN UDRP
cases where relevant to such issues as what facts make a common law trademark,
or whatever evidence from persons with personal knowledge is inclusive of
- affidavits reporting
(i) a given context in detail (ii) supported by
illustrative exhibits, (iii) when events happened or were
continued or terminated,
and (iv) how did the
affiant come by personal
knowledge of the facts;
- how substantial in
terms of money or man-hours expended
in a mark promotion or
a product launch under a given mark;
- what are the relevant market segments and channels of
advertising and trade;
- whether events
actions or circumstances were de minimus or substantial and
significant in context, and why;
- nature, number of ad
units, time, market segment, and cost
and timing
of advertising the
product launch;
- types of channels of the advertising, as magazine ads with
many samples
submitted in evidence, bill board ads with
number and locations
submitted in evidence, radio tv or other
ads with amount, dollar value, costs of the project, and quantity and dates of sale of goods under a mark, etc.
is highly meaningful and persuasive of
some common points;
- the nature of the connection and relationship-uses of the
mark in connection
with
product A, B, and C, and when those connection/relationship events
occurred;
- a true copy of the official PTO the office PTO file of a
trademark application and Patent/Trademark Office Actions and applicant
responses thereto and a relevant
domain name application;
- a chronology of dates of first uses, applications and
registration dates.
Evidence not presented
in this case, in each of those categories, would have been helpful on one or
another issue in or potentially in this case. That kind of evidence is of high probative value, carries with
it high persuasiveness, on points to which it is relevant, whereas mere allegations of self-serving conclusions of contested issues are often almost
completely meaningless to the Panel.
These various
difficulties are substantial in this case, making it difficult to arrive at
well-founded conclusions on a number of subsidiary facts.
B. Party relationships
on each side.
There appears to be no
real contest on the point of Complainant Percy Miller, for our purposes here,
being accepted as either doing business as or owning effective controls over
“Boutit Inc.”, “Boutit Intellectual Properties …”, “100% U Clothing
Corporation,” and “Soldier University, Inc.,” “Universal Records / Motown.”
The evidence as to effective quality control and license contract
quality control among these entities is variable and in some instances weak to
non-existent.
On Complainant’s side,
some of these company and corporate forms appear to be trade names of
wholly-owned corporate entities, whether they be manufacturers, dealers,
distributors or outlets of Percy Miller’s products, or products of or some
other form of affiliate of Miller activities.
The primary product line for NOLIMITRECORDS is musical recordings of
almost any kind and entertainment performances. The primary product line for P.MILLER involved in our dispute is
clothing.
While there are
significant limits on the concept of accepting conclusory allegations as proven
without supporting evidence of some potentially relevant details, in the
context here of no challenge on this point, I shall treat these named entities
for our purposes here as alter egos one of another.
The reciprocal of that
conclusion of course applies also to Devine Mafa and his “Devine Corporation,”
which I construe to mean The New No Limit Records, Inc. I do not recall there being any evidence or
inference of a form of a trademark quality control in Devine Mafa over any
other dba nor any other dba excepting The New No Limit Records, Inc.
In neither submission
in this case is the record nearly complete in detail, but in the context of all
the submitted material and the possibly de minimus dispute on this detail, that
conclusion of the two paragraphs above seems like one reasonable application of
the parties positions.
I have not found any of
the Respondent’s promised evidence as to Financial Foundations Inc. of
Clearwater Florida, or the source of or support for its name.
C. The Dispute over <thenewnolimitsrecordc.com>
domain name
Respondent’s submission
¶1 is a good summary of all his allegations and presentations by way of defense
against the Complaint with respect to “THE NEW NO LIMIT RECORDS”. It will serve
a purpose if I work through that paragraph sentence by sentence with my
comments as to how a Panelist who is experienced in trademark law and practice
as well as domain name practice, reacts to those sentences.
Respondent
¶1, Sentence 1.
“The New No Limit Records Inc. owns The
Trademark (The New No Limit Records) listed with the United States Patent and
Trademark Office, hence has right to own this domain name (thenewnolimit
records.com)
I regard that as in error.
First, a state
corporate administrator’s granting of a corporate charter under any given name
is a ministerial function without any undertaking to resolve disputes among
businesses with respect to unfair competition, trademark rights, trade name
rights, or the like. No legal rights relating
to competitive use of marks/names are to be inferred from the existence of a
corporate name standing naked and alone, independent of the factors of the
competition or affecting the competition.
Rather the source of determination of disputed trademark/trade
name/domain name rights is the judicial system or arbitration/mediation, rather
than state administrators.
Second, “listed” is a
peculiar word here. By contrast with
persuasive evidence, I find in the record neither registration number nor a
straightforward statement that Respondent owns “common law” or “registered”
trademark rights in THENEWNOLIMITRECORDS. If Respondent relies on its extensive
use of THENEWNOLIMITRECORDS converting that term into a common law mark owned
by Respondent, that theme of its case fails for lack of the kinds of probative
evidence of a common law mark some of which I outlined above; when the use has
been short term the most probative evidence but for cost in time and money
which UDRP seeks to avoid, likely includes public survey. More relevant here it
includes dates of use, geographic extent of use on what dates, channels of
advertising, target market segment, expenditures in development of the market
and the trademark, how much use, what
product line, how much product sales under the mark if any, and a very explicit
explanation as to why Respondent’s claim is superior to Claimant’s given the
premise of my finding noted above that for our purposes here,
“THENEWNOLIMITRECORDS” is confusingly similar to “NOLIMITRECORDS”.
I find only a weak and
unpersuasive presentation of a theme for Respondent’s use of the mark before
Claimant had acquired its trademark rights through registration and the prior
uses going back to l992.
I find that Respondent
has failed to carry its burden of proof that it possesses a common law
trademark, or a matured regular registration of the mark based on use in
Commerce, or a past commercial use of the mark.
While it might be
argued that Respondent was not fully candid in failing to describe its
application to register THENEWNOLIMITRECORDS as an Intent To Use (“ITU”)
application, the record before me points to the conclusion that Respondent’s
trademark application is an Intent To Use (ITU) application. Such an
application is not legal evidence of any business activity or other use in Commerce
of the mark as a mark.
Whereas there exist
situations where a party with an ITU registration can enjoin new activities of another
that would take away the possibility of full title rights in an ITU mark
maturing later, that is not the situation here. Complainant here is shown by the statements in its completely
registered mark (now by any rule admissible evidence in the form of a
government certified document) and elsewhere about its use of its mark, already
to own its registered mark with registration number and a date of first use in
Commerce both before any efficacy of the Respondent’s ITU concerning uses in
Commerce. Respondent’s ITU is not
frustrated by a new activity of Complainant, but rather by prior acquired
rights of Complainant.
Respondent
¶1 Sentence 2.
“It [The New No Limit Records Inc”] is also a fully functionally
incorporated company, operating at an international level.”
There is no evidence as
to the amount, nature, place, or location of any national or international
operations, other than a self-serving conclusory allegation of its been an
information news and record company which at some not-revealed time got 30 hits
in one month. There is no evidence of
work to prepare. The slight
implications are that Respondent does not create music, nor manufacture
records, but no real evidence.
Arbitrators and Judges have seen such a type of a self-serving
conclusory allegation, when unsupported by supporting evidence, be supported in
fact by so little as three letters to an acquaintance in Mexico or the likes of
that.
Relevant in Domain Name
cases is whether the Respondent has initiated substantial efforts to develop
its commercial business before a Complainant obtains its legal rights. That expression contains both “substantial”
and “before”, and the data provided should be supporting evidence of those points as distinguished from
self-serving conclusory statements.
When did THAT company acting through its corporate forms and structure,
elect or designate what officers and employ what employees; when and where did
it start its operations in the nature of (i) manufacturing products, (ii)
offering products for sale under its mark, (iii) through what channels of
trade, (iv) to what market segment; what were the products; what was required
for the product launch; how much money was spent over what time frame in each
of the various steps in the first product launch; when was the first director’s
meeting held; who attended; what were the steps of finalizing the Board of
directors and corporate officers for corporate operation. And perhaps most importantly because it is
so often left out, how were the expenses in what amounts tied to and part of
the product launch on what date. To
persuade a person a writer it must come alive so I find the whole experience
consistent with and compatible with my lifetime experience in new company
organization and new product launches, and my experiences with
non-cross-examined witnesses from all walks of life exaggerating things
creatively beyond credible imagination.
Respondent ¶ 1, Sentence 3.
“The new no limit record’s is an information news and record
company.”
The realities of that
business in terms of what is involved for that company to design, generate,
produce and sell a product in Commerce, is not known to me. What kind of news? Recordings for the home market?
There are big variations from company to company, from product to
product, from market to market. What
were the dates and cost of purchase/installation of manufacturing
equipment? Manufacturing and sales
records circa launch of the trademark?
Producing an information news magazine; if so, when? So in providing evidence of what degree of
substantial preparations for a market were indulged before the date of
Complainant’s perfection of its rights, a party must put itself in the position
of the judge or administrator and the issues (s)he is judging, and sell him with accurate probative evidence
that gives him/her a feel for the credibility of the conclusion you want
her/him to conclude.
On the evidence before
me I cannot reconcile the “information news and record company” with any
importance of trademarks, or domain names, or the small number of “hits”, nor
how the product is advertised to different market segments, nor whether other
self-serving statements are incredible or highly credible.
Respondent ¶ 1 Sentence
4.
“Business on the web is also of vital
necessity and importance provided
it has been done the right way following all the rules set forth by ICANN.”
[Emphasis in the original,
and I don’t really understand the need for that emphasis here, or what I am to
take from it.]
I read the words, but I
haven’t any good idea of why that may be so, no idea of what is the correct
construction of the word “vital” in context of the small number of hits
elsewhere alleged to occur on one of these party’s web site. I need evidence of how vital web business is to an information /records company
like this one, why it is vital, and what is the nature of and likely amount of
any losses that may follow from a change of a name. When was the number in a month of hits on Respondent’s site 30 in
one selected month as per Respondent’s sentence 10? How many man months and dollars were expended in developing an
inventory, preparing the domain name’s site for launch? Is the loss to either party caused by a
change to a new mark, only a dilution of distinctiveness of a mark, or a
defamation of a mark? Is it worth
millions of dollars? If the number of
hits is always very small as is reported, then the loss of changing a domain
name cannot be to these parties, what it would be to an Exxon or Coca
Cola. Without relevant evidence somewhat of the types I have described, I
can’t understand confidently what Respondent meant by “vital”, but I think that
word is a gross exaggeration of the reality.
Respondent’s
¶ 1, Sentence 5.
“When
our company was registered, we had no known knowledge of No
Limit
Records owned by Percy
Miller.” [Emphasis in the
original]
Since the Respondent’s
company name incorporates the whole registered trademark in issue, the date
of “registration” of the company “THE
NO LIMIT RECORDS INC” would have been a very helpful date in a chronology. And it would be helpful to know whether
“registration” means grant of the corporate charter or what.
But as I get
Respondent’s contention, without a prior knowledge of any of the record
business or marks used in that business by P. Miller though P. Miller was
famous in his market and had sold 50 million records, it was only by
coincidence that Respondent selected “THE NEW NO LIMIT RECORDS INC.” for an
information news and record company.
That is a non sequitur. There
exist some “gillion” marks Respondent could have chosen with better
compatibility than the mark that was chosen, with a more logical relationship
to information and news than “THE NEW NO LIMIT RECORDS”.
That chosen mark
generates a knee-jerk reaction of “odd ball”.
Without a prompt, like knowledge of the P.Miller business’s mark, you
could ask 1000 people from within the advertising business plus 1000 people
having no connection with that business to select a mark with total confidence
that none of them would chose “The New No Limit Records.” Unless it was selected in response to the
competitors successful mark, its use by Respondent just doesn’t fit.
And though P.Miller was
and is a famous name in a significant market segment, enough so to land his
successes in Fortune’s and Forbes magazines, it was an innocent coincidence
that Respondent came up with a Patrick Miller as a partner so it could have the
excuse of using his name. I note that
no evidence is provided as to what Patrick’s first name was at birth, or what
his job or salary is with the company, or whether he is a partner with Devine
Mafa or with the company, The New No Limit Records Inc., or is an employee or
officer of that company--information that might suggest he is real and
legitimate.
The likelihood of these
several coincidences occurring without a prompt is surely less than one in a
thousand. Respondent’s representations
therefor are pretty solid evidence of bad faith in the presentation to the
Panel, and connote similar bad faith in its competitive relationship with
Complainant. The burden of proof needs
to be carried only to 51%, and here it is many multiples of that.
Respondents ¶1,
Sentences 6-7
There
is no close similarity between No Limit Company to our Trademark The New
No Limit Records. The trademarks are far
from close even as domain names.
I read UDRP 4(a)(i)’s
“confusingly similar” to have the meaning of such phrase that is the normal
meaning in trademark law and practice.
If that is the definition, then:
To say “there is no
similarity between [the two marks]” is to pretend that Respondent’s mark does
not include “No Limit Records”. Undeniably it does, so such an allegation is
clearly false. This is not merely
similarity but identity in three out of five words. The two new words, “The New”, are adjectives that add a quality
to the three identical words, without significantly changing their original
meaning, “No Limit Records”.
There is no doubt in my
mind that persons familiar with ‘NO LIMIT RECORDS” as a trademark for records,
upon seeing “The New No Limit Records” would think this mark was by the same or
successor entity as the earlier mark (s)he knew about, or would think this is a
new/improved variety of product from the same old company, or is otherwise
endorsed and sponsored by the same company as that with the “No Limit Records”
trademark. The likelihood of that error
in thought by a substantial portion of the public is very high.
Similarly, to say that
the trademarks are “not close” defies reality for the reasons
above--”closeness” within the meaning of trademark law and practice is measured
by the degree of likelihood of confusion as to source, sponsorship or
endorsement. As aforesaid there is
plenty of that likelihood.
Respondent’s
¶1, Sentences 8-10
“To assert that web traffic will be lost
to our domain name is not a true fact.
Our Web hits do not even indicate that fact at all. In a month the new
No Limit Records.com [sic, the lower case on “the
new” connoting the cite was then using precisely Complainant’s mark rather than
“The New No Limit Records, but I construe that as typographical error] has received less than 30 visitors as per
the count.
As aforesaid, thirty
hits in one month, less the number it would have with some other domain name
that might be more logically appropriate, does not seem “vital” as previously
alleged. What is the date this low-order
operation started? Was the launch of
it, and the advertising of a news and record company, a big and expensive thing
reaching millions of people, or a $100 effort, total? Without context of the nature of and investment in the business,
there simply is no way to say that 30 hits per month is a meaningful
allegation. To make 30 hits meaningful,
there must be context-evidence of the reasons for or value inherently in that
number.
Respondent
¶1, Sentence 11
The only people who visit our site are
those we advertised to.
What was the nature of
that advertising? Direct mail to an
individual or broadcast to the whole population? What pictures, words and phrases were used? Were the visitors looking for anything? What were the visitors looking for? How many copies or broadcast iterations of
it were distributed/broadcast to what audience? How many advertisements of what type went to or were read or
received by the particular visitors?
What witness did the correlation study between visitors names, and their
receipt of the advertising, in order to enable him to say all visitors, had
been advertised to with meaningfully effectiveness?
To have absolutely no
casual hits by a web surfer seems what?
Anomalous? Do all sites get a
substantial number even if only a modest few accidental hits?
While that statement
may be a perfectly true and correct recitation, without probative evidence of
the context of the advertising channels, volume and nature, a trier of fact
must give it little weight along with the many other self-serving conclusory
statements unsupported by evidence.
Respondent’s
¶1, Sentence 12 re “Bad Boys”/”Bad Boz”
Trademarks examples that have been
registered Bad Boz- serial number 74,730,490 [there is no trademark
registration with 8 digit numbers] and Bad Boys--Serial Number 2,045,529 (Annex
3a A,B)
I take it that the
point of this sentence is as a precedent, seeking to persuade me that marks
which are highly “similar” or “close” are sometimes registered. If that is the point, consider this: I have
spent years in trademark practice and I am well aware of a few of that kind of
precedent. I am also aware of reasons for most of them, which make Bad Boz/Bad
Boys an inapplicable precedent here.
Perhaps two such
similar registrations are owned by the same registrant. Perhaps one mark is used only on big jet
aircraft and the other on jelly beans, whereby by the nature of the difference
in product lines and markets, the public will not be confused into thinking the
same company produced or endorsed both products. Another example would be NBC
by National Broadcasting Company for broadcasting services, NBC by National
Biscuit Company for crackers, and NBC by National Bank of Commerce for banking
services--no likelihood of confusion. But here we have a record company vs. a
record company, and no indication that their records products are not identical
and are not selling the same class of records.
--Or perhaps the
examiner missed the prior reference in his search.
Among all of the
hundreds of modern trademark precedents involving apparently “close” or
“similar” marks to be registered, I am not aware of any. Respondent did not cite any holding where
the issue was raised and the holding was that such similarities are appropriate
and proper when the trademarked products are of the same type (records) and are
offered by both mark owners through the same channels of trade, on highly
similar products (records), inter alia to the same markets. There exist essentially no holdings of no
likelihood of confusion arising out of essentially the same mark being used on
essentially the same product type in the same channels of trade with trademarks
as similar as those we are now addressing.
Accordingly, with due
respect to the Respondent for his effort appropriately to influence the Panel’s
thinking with that citation, I am not persuaded by that precedent and I am
persuaded by others in my career.
Respondent’s ¶1, last
sentence
“In this facet it is apparently obvious
that, customers or the public won’t be
confused.”
This sentence is
advocacy with a self-serving conclusory statement, not evidence that forces the
logic of reaching that result.
Respondent’s
allegations of indictments, criminal activities by Complainant or his brother,
making money out of sleaze, threats, counsel claiming he has and will use
improper influence, and the like, are not within the jurisdiction of this
Panel. Some are mere hearsay
allegations not proven. Others are irrelevant
to the issues that are within the jurisdiction of this Panel. I have noted them, but disregard them.
D. Application of UDRP;
NOLIMITRECORDS
vs. THE NEW NO LIMIT RECORDS.[1]
UDRP
Policy §4(a) (i) requires a Complainant to prove:
(I) your [Respondent’s) domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights;
Complainant
Percy Miller owns a U. S. trademark registration 2,374,405 for NOLIMITRECORDS
first used as a trademark November l, l992. That is the trademark for
comparison with Respondent’s domain name under the “confusingly standard”
measure of the rule above.
A
trademark and a domain name are “confusingly similar” if a significant number
of those in the market or channel of trade of the trademarked products would be
likely to be confused into thinking the one was affiliated with, sponsored by
or endorsed by the other, or were marks of the same party or source.
I
find that large numbers of persons familiar with Complainant’s music,
entertainment and record businesses under the mark “NoLimitRecords”, with or without
spaces between or capital letters at the beginning of words, would think
“TheNewNoLimitRecords” is a new owner or new promotion of an improved or
related product line previously known as “NoLimitRecords” or endorsed or
sponsored by that already-known name.
By their nature, adding “The New” tacked onto the beginning of “No Limit
Records” does not differentiate the products sold under one or the other mark.
As
discussed previously, given that both are used in connection with music and
various forms of recording of music, there is absolutely no doubt but that
“TheNewNoLimitRecords” is confusingly similar within the meaning of §4(a)(i)
above, to Complainant’s previously duly registered “NoLimitRecords”.
Thus,
the requirements of 4(a)(i) are met in this case, as to Respondent’s <thenewnolimitsrecords.com>.
Indeed,
the very fact of Respondent’s advocating the contrary is so clearly contrary to
established trademark law and practice, that it reflects on the accuracy and
good faith of other allegations as well, an issue I discuss in connection with
UDRP 4(a) (ii).
Many
aspects of Respondent’s case are built upon Respondent’s contrary view of that
point of “confusing similarity” within the meaning of ¶4(a)(i), so my finding
on that point affects some others of the issues.
Subsection
(ii) requires Complainant also to prove:
(ii) you
[Respondent(s)] have no rights or legitimate
interests in
respect of the domain name,
I
start this section with the reminder of the fact that the parties’ evidence is contradictory, and
that there is good reason for a trier of fact to be skeptical of a number of
self-serving conclusory allegations on both sides. I also remind that the ICANN process is simply not a good process
for reconciling contradictory stories, separating truths from either
exaggerations or totally manufactured evidence, identifying confidently from
the contradictions what the truths are.
Further, Respondent’s evidence on this point is weak to non-existent as
regards such as:
- source of the idea for “The New No Limit Records” as a
trademark--that phrase
being a
rather odd-ball style of mark not likely to be chosen without a prompt;
- dates, markets, quantity, style and substantiality of
Respondent’s uses and activity with respect to “The New No Limit Records”;
- substantiality of the alleged co-nature of one Patrick
Miller’s ownership
in Respondent, vs. that ownership being
perhaps an after-developed or other cover story by the man’s changing his name
or being sought out by way of manufacture of the cover story after the relevant
date, etc.
Respondent relies upon
a group of extremely incredible coincidences in terms of Respondent’s
- innocence in its choice of a mark that includes 100% of
Complainant’s prior used NO LIMIT RECORDS mark,
- innocence with respect to uses by a famous person
who has acted in 16 movies (the kind and
attendance data is not revealed),
who is featured in
Fortune as number 28 in the nation’s “Forty richest under 40”,
who is featured on
Forbes’ “Top 10 List of Highest Paid Entertainers” for two years
who in one relevant market used the mark
NO LIMIT RECORDS on perhaps
50,000,000 records sold
before Respondent used THE NEW NO LIMIT RECORDS.
While Respondent is
labeled “Divine Mafa dba The New No Limit Records, Inc.”, there also is a
conclusory allegation that one Patrick Miller is a co-owning “partner”. There are also other allegations that simply
omit him, leave him out of that co-ownership.
There is no evidence of when or how Patrick came to be a participant in
the Respondent-business or whether his ownership is a cover-story of a one per
cent ownership that was given to him just prior to the filing of Respondent’s
papers in this case, or was a substantial interest for which he paid realistic
money at convincing times past.
Complainant has a
registration of a trademark No Limit Records claiming first use back to Nov 1,
l992, which date has not been contested.
The use is asserted as continuous use since then.
Given the evidence
before me, including my conclusion that the Respondent’s mark and company name
are an infringement of the Complainant’s registered trademark, I find that
Respondent has not shown any legal right to adopt into in its domain name, the
words “No Limit Records”, and Complainant has carried its/his burden of proof
on UDRP 4(a)(ii).
Subsection (iii)
requires:
(iii)
your [Respondent’s domain name has
been registered and is being used in bad faith.
The discussions above
justify my electing, in context of conflicting assertions in significant part
unsupported by real probative evidence, and some showings only by self-serving
conclusory statements, to conclude that Respondent’s registration and use of <thenewnolimitsrecords.com> is in
bad faith.
But there is conflict
also on two further important evidence themes which are so routinely
determinative of the bad faith issue, as to merit comment here.
First: Complainant alleges in its ¶9 with respect
to Respondent’s filing of false information via U.S. Mail ,
- that the registered
ownership of THENEWNOLIMITRECORDS.COM and
P.MILLERCOLLECTION.COM. on June 12, 2002, was Itochun
Corporation of
Tokyo, Japan;
- that it is illegal to submit false information as part of
a domain name application or process;
- that Complainant
wrote a cease and desist letter to that registered owner and received a reply
denying any knowledge of those domain
names and stating that they never heard of Respondent, Devine Mafa.
- Etc. per ¶ 9.
This much is the kind
of details of a fact story by Complainant and within Complainant’s knowledge
that are not usually made up out of the whole cloth and told in a dispute
resolution proceeding; hence these points tend to carry more probative value
than self-serving conclusions. In the
next few sentences appear what appear to be speculations about what Respondent
was doing or intended, and why Respondent was doing what it did; in significant
part these were self-serving speculations as to which Complainant shows no
source of responsible knowledge, and hence some of these are very low on the
scale of probative value when, as here, not supported by similar confirmable
factual details. But I believe that
Counsel for Complainant who wrote the pleading personally believed the general
concept of his recitations, even though I’ve often seen Counsel negligently
fail to check out client’s elaborate versions of their stories. What counsel do know, is often different
from what they should have known.
Respondent asserts in
its responsive ¶ 9 that it never heard of that Japanese company. That is a pretty flat and effectively total
denial, though it does not directly and explicitly deny “filing erroneous
ownership data.” Respondent’s further ¶
9 presentation has its own appeal.
There is no way for me
to confidently reconcile the two paragraph 9s of the two adverse pleadings in
this ICANN fast-track-low-cost proceeding.
Second: Complainant’s ¶
10 reads in part,
On June 18, 2002, Respondent, Devine Mafa,
sent an email to Complainants’ attorney in response to the aforementioned Cease
and Desist Letter, stating that Respondent owned the domain names at issue,
that Respondent’s business is to sell domain names that they have listed as
trademarks, and demanding $100,000.00 for transfer of the domain names at
issue. A copy of Respondent’s email to Complainants attorney is attached hereto
as “Annex 14”.
Respondent’s ¶ 9, 10,
11,12 and 13 include various rebuttals to this allegation, including flat
denials of ever talking to anybody about selling a site for $100,000 or seeking
advice from Claimant’s attorney. Also,
though Complainant cites Annex 14 for the proposition that Respondent’s
business is to sell domain names that they have listed as trademarks, “Not a
single day did the respondent ever offer to sell any domain names to
claimant.” “Respondent does not sell domain names and
has never sold a single domain name.
Claimant is challenged to demonstrate the accusation [that Respondent
did].” I have no evidence upon which to base a
decision as to which recitation is correct, or whether while selling domain
names was an intended business of the new company it has in fact never
succeeded in selling one.
With respect to these
last two issues, I find that Complainant has failed to carry its burden of
proof sufficient for me to make a favorable finding on them, even though I do
otherwise find bad faith in the registration and use of the name, <thenewnolimitsrecords.com>
UDRP 4 (c) recites
three “safe harbors” for Respondents, quoted above I have considered each of
them against the evidence and allegations submitted to me, and find none of
them availing to Respondent.
I have given the other
claims of each party as diligent and complete attention as is reflected above
with respect to the domain name <thenewnolimitsrecords.com>. I have found contradictions, failure of
critical evidence such as dates of use and investment in commencement of use of
a domain name, etc., whereby I can not find that the claiming party has carried
its burden of proof. As aforesaid, this
is in part because there is no vehicle in this ICANN process for confident
resolution of conflicting allegations and evidence. The vehicles for resolution of the other disputes in this case
are judicial process in court and/or the alternatives thereto, arbitration,
mediation, and collaborative dispute resolution.
A. The Domain name <thenewnolimitsrecords.com> (in letters of either case, with and without spaces between the
words) shall be transferred to Complainant.
B. Complainant has failed to carry its burden
of proof with respect to the domain name, <pmillercollection.com>
(with or without the period after P), and accordingly the Complaint is dismissed
with respect to that domain name.
C. Under the UDRP the Panel has no authority to
rule on counter-claims involving other domain names; therefore this Panel will
make no ruling. However, in its review
of Respondent’s submissions the Panel believes Respondent has failed to carry
its burden of proof with respect to either the domain name, <p-miller-collection.com>
or <pmiller-collection.com>.
Respondent has renounced any claim with respect to
<nolimitrecords.com> making that claim moot.
Tom Arnold
Sole Panelist
September 19, 2002
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[1] Respondent has variously used the marks as run-together words in one case, and as separate words that are capitalized. That is consistent with my finding that whether the subject expressions have the words separated or run together as though a single word, and whether they are all capitals or all lower case or have capital letters only at the beginning of each word, does not change the confusing similarity conclusion I hear reach. Those several different formats of the marks are for purposes of this Decision, legally equivalent.